PENDING ISSUES REGARDING CORRECTIONS TO BE MADE AGAINST
INVALIDATION-PART II

Wei-Ting Chou, Patent
Director, Patent Group I

¡½Master
of Agricultural Engineering, National Taiwan University

¡½Bachelor
of Medical Engineering, National Cheng Kung University

¡@

3. Currently, there are
the following three opinions regarding whether a petition for a
correction during the administrative remedy against an invalidation case
should be accepted: (1) the petition should be accepted, (2) the
petition should not be accepted, and (3) a compromise approach. No
matter which opinion is adopted, it is hard to find a balance between
legal and practical sides because each opinion has its own advantages
and disadvantages. According to the three opinions above, three
applicable schemes (A), (B) and (C) are analyzed as follows:

(A) Acceptance in any
circumstance: In other words, during the administrative remedy against
the validation decision, no matter whether the correction is submitted
in response to another invalidation or independently, the correction can
be accepted.

(B) No acceptance in
any circumstance: In other words, any correction submitted during the
administrative remedy against an invalidation decision should not be
accepted.

(C) Acceptance
depending on certain circumstance: In this regard, there are the
following two sub-schemes.

(C).1 If the
correction petition is submitted during the administrative appeal
against an invalidation decision, and the correction can affect the
basis on which the decision is made, the petition will not be accepted.
However, if there is no such effect, the petition can be accepted. The
effect can be a direct or indirect effect.

(C).2 Sub-scheme
(c).1 applies mutatis mutandis except that the subject content of the
invalidation decision is that the invalidation is wholly dismissed.

4. Results of
analyzing the schemes:

4.1 Scheme (A) that
there is acceptance in each circumstance:

Introduction:
the correction petition submitted during the administrative
appeal against the invalidation decision can be accepted, no
matter whether the correction is to be made in response to
another invalidation or independently.

Reasons for the
acceptance

A citizen has
rights to make the correction. Furthermore, in the Patent Law,
there is no explicit limitation regarding when the correction
petition should be submitted. Therefore, if an executive order
is made to limit whether the correction petition can be
accepted, there might be issues of violating the principle of
law clarity and definiteness and the
principle of law reservation.
Accordingly, the correction petition submitted during the
administrative appeal against the invalidation decision should
be accepted, so as to avoid a dispute.

Advantages and
disadvantages

Advantage:

The patentee¡¦s
rights to make the correction can be protected.

Disadvantages:

1. If the
correction petition submitted during the administrative appeal
against the invalidation decision is accepted, the correction
will be retroactively effective from the filing date, and thus
the decision basis of deciding the invalidation will be
changed. Therefore, the higher authorities will revoke and
remand the decision without making a substantive examination,
and order that a reexamination should be made according to the
newly issued claims. Accordingly, the legal stability cannot be
maintained. In addition, if the patentee repeatedly makes
corrections as a defense, the prosecution will be adversely
prolonged, and thus there will be wastage of litigation
resource.

2. After it is
decided that there are one or more claims irrevocably
invalidated in a preceding invalidation case, a substantive
binding effect for revocation thereof will be generated.
Therefore, even if the correction petition is accepted, a
decision therefor cannot be made, and thus the protecting scope
of the one or more claims will not be changed.

Practicability

1. During the
administrative appeal against the preceding invalidation
decision, if there is an independent correction petition or a
correction petition in response to a subsequent invalidation
case, the independent correction or both the subsequent
invalidation case and the correction petition therefor will be
deferred until the administrative appeal decision is made, so as
to avoid the change of the decision basis of the original
invalidation decision.

2. According to
the above, if there are multiple invalidation cases, the
subsequent independent correction petition or both the
subsequent invalidation case and the subsequent correction
petition therefor will be deferred.